IPBiz

Intellectual property news affecting business and everyday life

Thursday, June 30, 2011

New Jersey's NJN: April 5, 1971 to June 30, 2011

The last show on June 30, beginning at 11:30pm on June 30, was Theater Talk (seemingly a recycle from earlier). Jacques Le Sourd, UofChicago, was a guest on the show. There was a filler show at 11:55pm on Supawna Meadows. Then, Janice Selinger spoke about NJN delivering a bountiful harvest. There was a big "thank you" from NJN posted on the screen. Then a clip for NJTV, njtvonline.org, as the guard changed at midnight. Channels 52.2 and 52.3 ended at midnight.

***

Of Theater Talk, Jacques said of Chris Rock's show that he had a problem with "what's it about," but seemed to like it at some level. Michael Riedel also commented.

Other quotes from the show: the most wonderful thing a critic can say, I was wrong. Of Jerusalem: Romantic twaddle. It's so 1928.

In the news slot from 11 to 11:30, there were retrospectives from various newspeople, including Sarah Lee Kessler. There was a wicked video of Guv Christie saying how useful NJN was.

Tuesday, June 28, 2011

We have recently clarified the standards for determin- ing materiality and intent that district courts should apply in resolving issues of inequitable conduct. See Therasense, slip op. at 24-35. To prove inequitable con- duct, the accused infringer must provide evidence that the applicant (1) misrepresented or omitted material informa- tion, and (2) did so with specific intent to deceive the PTO. Id. at 19 (citing Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008)). Under Therasense, the materiality required to establish inequi- table conduct is, in general, but-for materiality. Id. at 27. When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art. Id.

Under Therasense, “the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.” Id. at 24. Although the court performed a detailed analysis of the facts withheld, it made no holding that any of the inventors knew that the withheld informa- tion was in fact material and made a deliberate decision to withhold it. Instead, it relied on the sliding scale standard that we have rejected en banc in Therasense, id., basing its finding of intent significantly on the materiality of the 96RL system to the claimed invention.

McDermott et al. developed a circular, wreath-like, graph to display all the genes being expressed by the cyanobacterium Cyanothece over a 24-hour period. This depiction illustrated the complex genetic network that enables Cyanothece to switch its cell between photosynthesis and nitrogen fixation as the day turns to night.

Cyanothece makes "sugar" when there's daylight and then spends the night breaking down that "sugar" to fix nitrogen and to produce other compounds. A modeling approach [ Inferelator ] identified an unnamed gene, currently labeled as gene cce_0678, as being key to the cyanobacterium's production of RuBisCO, a well-known enzyme that's important in photosynthesis. Without cce_0678, the model predicted RuBisCO production would decrease by about 60 percent.

“For too long tomorrow’s inventions have been stymied by today’s incompetence in government. It is outrageous for Congress to take fees paid by Americans for a specific service and spend those dollars on other programs. Since 1992, Congress has pilfered nearly $1 billion in user fees dedicated to the Patent and Trademark Office and spent those dollars elsewhere. As a result, we have 700,000 patents waiting for a first review that, if approved, could help get our economy moving again.

The Senate voted to end this egregious practice by a margin of 95 to 5 when it passed legislation this March that included an amendment I offered to end fee diversion once and for all. The House, unfortunately, decided to water down this language and allow the Appropriations Committee to control this account. Unfortunately, the Appropriations Committee has a poor record of managing such accounts responsibly and honestly in this area and others."

Garmin Ltd. announced that the U.S. International Trade Commission (ITC) issued a final determination on June 24 finding no violation of Section 337 of the Tariff Act with respect to Garmin's imported navigation products. An ITC administrative law judge previously ruled that Garmin's products do not infringe any of the patents asserted by Pioneer.

Sunday, June 26, 2011

Wynton Marsalis on "60 Minutes"

Wynton started off in The Rumba Palace in Cuba. Allan Jackson referred to drums as musical DNA. There was a solo by Ted Nash; Nash is the bands flipcam photographer. Marsalis stopped for a cafe cubano, and talked about taking chances. Nash talked about getting re-charged by the energy of the people. Carlos Enriquez initially from the South Bronx, had been interviewed by 60 Minues in 1994. Look out for Carlito. The elephant in the room, politics, came up. There are 50 US State Dept. employees in Cuba. Cultural diplomacy, no rhetoric allowed. Marsalis visited the National School of Music. Music transcends politics. Marsalis: We speak to the human soul.

See also previous story on CBS Sunday Morning:http://ipbiz.blogspot.com/2010/07/cbs-sunday-morning-on-july-4-2010.html

CBS Sunday Morning on June 26, 2011

Anthony Mason (not Charles Osgood) introduced the stories for Sunday, June 26, 2011. The annual money issue Money Matters. The cover story was done by Rita Braver. Everybody coming up with new ideas to induce boomers. A suit called Agnes for aging baby boomers. Second story began with the talking gecko. Advertising icons. Third, Mo Rocca on sea captains. The super yacht business is underwater. [This story has been recycled.] Fourth, Bill Whittaker on Hugh Hefner. Fifth, money laundering by Bill Geist. Making creations from lint. [This story recycled.]

Headlines. Good news for residents of Minot, ND. 6 deaths in train collision in Nevada. Iowa poll led by Mitt Romney. Gary pride in Paris. Billy the Kid photo sold for 2.3 million.

Weather. Coast to coast warm to quite hot.

First story: the booming business of baby boomers. "You're getting better" by Rita Braver. They are determined to keep old age from keeping up on them. 72 million Americans age 65 by 2030. Boomers are demanding a new array of products and services.Couglin, Director of MIT's age lab. 63 year old correspondent turned into a 75 year old via "Agnes" suit. Companies like CVS have adjusted shelves for older people. Previously: I've fallen and I can't get up. A quarter of new car buyers are 65 plus. New technology to monitor health. Thomas Reilly of Oregon State Health and Science installing monitors in 75 year old Curtis Guthrie. Sensors as an early warning system. Robot: Celia. Old people have 3.4 trillion buying power. Baby boomers leave a legacy of empowerment. Survey shows they don't believe old age begins till 72.

Success stories. Serena Alschuler. Good looking eyeware. Warby Parker. Provide glasses for $95. The four founders met at the Wharton School at UPenn. GQ: netflix of eyewear. Web-based sales approach. Innovative business model. Striving to be a force for good. Warby Parker has donated 60K pairs of glasses. 64% of US population use corrective lenses.

Laksman reports on "how much trouble" the economy is in. There is another slow down. A cyclical slowdown will last for several quarters. The global industrial sector has started to cool off. In US, Europe, Asia. Slowing to continue through the end of this year.

John Blackstone on art books. Taschen Bound to Succeed. [This story is recycled.] Cristo book. Taschen started in comic books, and discovered a market in catering to collectors. A portion of the work borders on pornography. Refers to the Simpsons. Taschen bought the Chemosphere. Believing in the future, being optimistic. Being vulnerable is being human. News clip about ebooks.

Lunchtime in China with KFC. A recycled story. America's food chains testing China's taste buds. KFC first came to China in 1987. Yum Brands has 3900 restaurants in China. Book: "KFC in China". 90% of Chinese KFC restaurants owned by Yum. In China, drink is soy bean milk. A new location in China opens every 18 hours.

Russ Mitchell on business cards, a recycled story. Creative, clean, and inspring. Example of a card that costs $8 a piece. Joel Bauer, marketing expert. "Your business card is crap." Get a good card or else. You need to differentiate in a world where most people are interchangeable.

Lakshman Achuthan, managing director of the Economic Cycle Research Institute, on unemployment. Says we are having an impressive creation of jobs; we are lucky if we get a quarter of jobs back. Lose 7 jobs and get one. That's the shift that's going on in the recession

Bill Whitaker Sunday Profile on Hugh Hefner. A party animal still running wild at age 85. Refers to home as Shangri La. Trademark Playboy Club is now bouncing back after decades of decline. Playboy hit stands in 1953 with Marilyn Monroe. See http://www.marilynmonroe.ca/camera/Playboy/. Criticism: You're not celibrating women; you're degrading women. Brigette Berman: movie on Hugh Hefner.An iconoclast who has been tearing down barriers. Playboy Mag circulation is now 1.5 million. Runaway Bride. Changing social values of our time. An amazing icon.

Nancy Giles on Jamaican Savings Bank in Queens; her account started in 1969. To save or not to save. Plastic cards with your name. Mentions her role in China Beach. This story is recycled. Nancy's book of proverbs. Zillionaire personal savings machine. A nickel ain't worth a dime anymore.

Bill Geist. Mona Lisa of toast. Last supper out of lint, hangs in Orlando. Ripley's Believe it or Not. 47 pieces of lint are. This story is recycled.

Laksman on fading super power. China is being impacted by our slowdown. They cannot disconnect from us. We are the primary consumer. Everybody wants to own our debt. GDP of US of 14.6 trillion; China second.

Next week on Sunday Morning: Katy Perry.

Moment of nature by Pradaxa. Maxwell Wildlife Refuge in Kansas. Allusion to appearance of bison on US nickel. This story is recycled.

Saturday, June 25, 2011

The patents in the case relate to creatine formulations that increase the bioavailability of creatine. Starmark had the '373;Creative the '273.

Of the "interference" angle in the case:

Creative argues that the district court applied the wrong burden of proof for Creative to establish invalidity of Starmark’s patent. Relying on Environ Products, Inc. v. Furon Co., 215 F.3d 1261 (Fed. Cir. 2000) and Slip Track Systems, Inc. v. Metal-Lite, Inc., 304 F.3d 1256 (Fed. Cir. 2002), Creative argues “[t]he correct standard of proof of priority of invention, as between co-pending interfering patents, is the preponderance of the evidence, the junior party bearing the burden of pleading and proving prior- ity.” Environ, 215 F.3d at 1266. Because the ’373 Patent and ’273 Patent were co-pending and Creative alleges that there is no patentable distinction between claim 1 of the ’273 Patent and claim 3 of the ’373 Patent, Creative claims it was entitled to a preponderance of the evidence standard for proving invalidity of the ’373 Patent.

Starmark responds that the district court applied the proper standard of clear and convincing evidence. Accord- ing to Starmark, Environ and Slip Track are distinguish- able from this case because both cases involved either an action predicated upon 35 U.S.C. § 291 or a judicial de- lineation of conflicting subject matter. See Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1367 (Fed. Cir. 2004). In this case, Starmark asserts that the parties never stipulated to the common claimed subject matter, that Creative did not present evidence of common claimed subject matter, and that Creative did not plead a count under § 291. Creative “must surmount the clear and convincing burden of proof to demonstrate priority.” Id. Finally, Starmark notes that the district court stated that even if it erred in not applying the preponderance stan- dard, “any error could not have ‘changed the result.’” Order at 4, Creative Compounds, LLC v. Starmark Labs., Inc., No. 07-22814 (S.D. Fla. Aug. 31, 2010), ECF No. 187 (citing Environ, 215 F.3d at 1267).

See Eli Lilly, 376 F.3d at 1367 (stating “Environ Products prevents form from triumphing over substance in priority contests embedded in infringement proceedings, provided that the parties have stipulated to a definition of the interfering subject matter.”). Creative faces the same presumption of validity faced by all ac- cused infringers and must prove invalidity by clear and convincing evidence. The district court did not err in holding Creative to the clear and convincing standard. Having determined the proper standard, this court will now address the merits of Creative’s invalidity allegation.

**Of 102(g)

Creative contends that the ’373 Patent is invalid un- der § 102(g)(2) because of Creative’s prior invention. Creative alleges that Cornelius, named inventor on the ’273 Patent, conceived the subject matter of the ’373 Patent prior to Boldt, named inventor of the ’373 Patent. For support, Creative points to an email order for “di- creatine malate” placed with Creative’s Chinese supplier as evidence of prior conception. This email, which also speculates that the method of making dicreatine malate should be the same as the method of making creatine citrate, predates the filing date of the provisional applica- tion that led to the ’373 Patent. Creative further alleges that Cornelius was diligent through his constructive reduction to practice, when he and co-inventorfiled the application leading to the ’273 Patent.

**Of conception

To establish prior invention, Creative was required to prove prior conception. “Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is therefore to be applied in practice.” Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2003). An idea is sufficiently definite for conception “when the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan he hopes to pursue.” Burroughs Wellcome Co. v. Barr Labs., 40 F.3d 1223, 1228 (Fed. Cir. 1994). “Conception requires (1) the idea of the structure of the chemical compound, and (2) possession of an operative method of making it.” Oka v. Youssefyeh, 849 F.2d 581, 583 (Fed. Cir. 1988). “When, as is often the case, a method of making a compound with conventional techniques is a matter of routine knowledge among those skilled in the art, a compound has been deemed to have been conceived when it was described, and the question of whether the conceiver was in possession of a method of making it is simply not raised.” Id.

Here, Creative relied on the 2001 email order for “di- creatine malate” and simply concluded that this suffi- ciently demonstrated conception of that compound. In this email, Cornelius speculates that the method of mak- ing dicreatine malate “should” be like that of making creatine citrate. The district court concluded, and this court agrees, that this email is insufficient to establish prior conception of the subject matter of the ’373 Patent. Creative failed to submit testimony explaining the signifi- cance of this email and whether this reference would constitute conception of subject matter within the scope of even a single claim in the ’373 Patent. Moreover, the email fails to reveal knowledge of a process for making dicreatine malate and, to the contrary, merely speculates that the process “should” be like that for creatine citrate. The email far from establishes that Cornelius actually possessed an operative method of making dicreatine malate.

Conclusory statements don't work:

Creative’s evidentiary shortcom- ings are not overcome by its reliance on attorney argu- ment. “It is well established that conclusory statements of counsel or a witness that a patent is invalid do not raise a genuine issue of material fact.” Biotec Biologische Naturverpackungen GmBH v. Biocorp, Inc., 249 F.3d 1341, 1353 (Fed. Cir. 2001).

Of 102(f)

Creative next alleges that the ’373 Patent is invalid under § 102(f) because Starmark derived the invention from Cornelius. In order to establish derivation, Creative was required to “prove both prior conception of the inven- tion by another and communication of that conception to the patentee.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1334 (Fed. Cir. 2003). As stated above, Crea- tive failed to raise a genuine issue of material fact con- cerning Cornelius’s prior conception. Furthermore, as the district court found, Creative failed to present any record evidence supporting any communication or that the alleged communicator actually knew of the claimed sub- ject matter. Creative’s only evidence on this issue was the uncorroborated deposition testimony of Cornelius himself. “[T]he case law is unequivocal that an inventor’s testi- mony respecting the facts surrounding a claim of deriva- tion or priority of invention cannot, standing alone, rise to the level of clear and convincing proof.” Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993).

As to 102(e)

Again, Creative failed to provide any testimony from one skilled in the art identifying each claim element and explaining how each claim element is disclosed in the prior art reference. See Schumer, 308 F.3d at 1315. “It is not the trial judge’s burden to search through lengthy technologic documents for possible evidence.” Id. at 1353. Conclusory state- ments simply mentioning the alleged prior art patent, relying on the same prior art considered by the PTO, and alleging invalidity fail to raise a genuine issue of material fact. See id. at 1354 (finding that merely mentioning an allegedly invalidating, yet otherwise unexplained, prior art reference is insufficient to survive a summary judg- ment of no invalidity); see also Tokai, 632 F.3d at 1367 (“[A]lthough the standard of proof does not depart from that of clear and convincing evidence, a party challenging validity shoulders an enhanced burden if the invalidity argument relies on the same prior art considered during examination by the [PTO]”).

A JPTOS article is cited on infringement:

Because the accused infringer is in a far better position to determine the actual manufacturing process than the patentee, fairness dictates that the accused, likely the only party able to obtain this information, reveal this process or face the presumption of infringement. Jeffrey I.D. Lewis & Art C. Cody, Unscrambling the Egg: Pre-Suit Infringement Investigations of Process and Method Pat- ents, 84 J. Pat. & Trademark Off. Soc’y 5, 22-23 (2002).

Letters of counsel to the industry came up:

The district court denied Creative’s motion to dismiss Starmark’s declaratory judgment counterclaim of invalid- ity of the ’273 Patent for lack of subject matter jurisdic- tion. The district court analyzed several letters sent by Creative to the industry. See Lawrence v. Dunbar, 919 F.2d 1525, 1529 (11th Cir. 1990) (holding that, in address- ing a factual attack to jurisdiction, the court may consider evidence outside the pleadings and is “free to weigh the evidence and satisfy itself as to the existence of its power to hear the case”). These letters contained a separate letter from Creative’s patent counsel opining that the ’373 Patent was invalid in light of the ’273 Patent and Haynes’s prior work. The district court concluded that “the dispute regarding . . . the competing ’273 and ’373 patents runs with the patents. As the ’373 Patent is now held by Starmark, the dispute is between Creative and Starmark.”

BUT

In the absence of a substantial controversy between the parties concerning an adverse legal interest, the district court lacked declaratory judgment jurisdiction of the ’273 Patent. Accordingly, the district court’s determi- nation of jurisdiction is reversed, and its grant of sum- mary judgment of invalidity of the ’273 Patent is vacated.

Friday, June 24, 2011

In denying a stay of a permanent injunction, the CAFC cited Hilton v. Braunskill, 481 US 770 (1987).

If you don't remember that one, this was a CRIMINAL case out of New Jersey: In January 1981, respondent Dana Braunskill was convicted in the Superior Court of New Jersey, Law Division, of sexual assault and unlawful possession of a weapon, in violation of N. J. Stat. Ann. 2C:14-2, 2C:39-5(d) (West 1982 and Supp. 1986-1987), and was sentenced to eight years' [481 U.S. 770, 773] imprisonment. The Appellate Division of the Superior Court affirmed the convictions, and the New Jersey Supreme Court denied review.

Of the result:

In deciding under Rules 23(c) and (d) whether to stay pending appeal a district court order granting relief to a habeas petitioner, federal courts are not restricted to considering only the petitioner's risk of flight. The history of federal habeas corpus practice indicates that a court has broad discretion in conditioning a judgment granting habeas relief, and a court's denial of enlargement to a successful habeas petitioner pending review of the habeas order has the same effect as a stay of that order. Since habeas corpus proceedings are civil in nature, federal courts, in deciding under the Rule whether to release a successful habeas petitioner pending the State's appeal, should beguided by the traditional standards governing stays of civil judgments -- whether the stay applicant has made a strong showing that he is likely to succeed on the merits.

Techdirt writes of issues with first to file [ That is, they [first to invent supporters] were defining inventor by being only the very first person to come up with it. ] and gets into the simultaneous invention idea:

Now, I don't believe this is true. I think many people can invent the same things entirely independently, and history seems to support that conjecture. One of my major problems with the patent system is that, despite the claim that it's supposed to help inventors, it actually harms every single other inventor, except the one who gets the patent. That seems incredibly anti-inventor to me. If, as is common, you have a bunch of different folks working on a particular innovation, and all of them come up with more or less the same solution, why should only one get the monopoly? That directly harms everyone else by taking away their right to use their own invention!

Techdirt's link on the conjecture business is to a piece by Malcolm Gladwell.

House Minority Leader Nancy Pelosi, a California Democrat, urged colleagues to reject the measure, saying elements of the bill would hurt small businesses and independent inventors.

Representative Don Manzullo, an Illinois Republican who voted against the measure, said it “would weaken our strong patent system that has protected American entrepreneurs for centuries from overseas companies trying to pirate their inventions.”

DANA ROHRABACHER also voted no. How many times do you find fROHRABACHER and PELOSI on the same side of an issue, saying similar things? In a piece ‘Patent Reform’ Will Hurt Innovation , fROHRABACHER had written:

“First to Invent” means that if one person applies for a patent that isn’t rightfully his, the real inventor can file, show his evidence in court, and be awarded the patent. Under “First to File,” by contrast, the person who filed first is simply assumed to be the true inventor. “First to File” gives large corporations and their lawyers an opportunity to steal ideas from innovators.

The issue was the conflict between a Vermont state law and the process of detailing:

Pharmaceutical manufacturers promote their drugs to doctors through a process called “detailing.” Pharmacies receive “prescriber- identifying information” when processing prescriptions and sell the information to “data miners,” who produce reports on prescriber be- havior and lease their reports to pharmaceutical manufacturers. “Detailers” employed by pharmaceutical manufacturers then use the reports to refine their marketing tactics and increase sales to doctors. Vermont’s Prescription Confidentiality Law provides that, absent the prescriber’s consent, prescriber-identifying information may not be sold by pharmacies and similar entities, disclosed by those entities for marketing purposes, or used for marketing by pharmaceutical manufacturers. Vt. Stat. Ann., Tit. 18, §4631(d).

The outcome:

(a) The outcome here is the same whether a special commercial speech inquiry or a stricter form of judicial scrutiny is applied, see, e.g., Greater New Orleans Broadcasting Assn., Inc. v. United States, 527 U. S. 173, 184. To sustain §4631(d)’s targeted, content-based burden on protected expression, Vermont must show at least that the statute directly advances a substantial governmental interest and that the measure is drawn to achieve that interest. See Board of Trustees of State Univ. of N. Y. v. Fox, 492 U. S. 469, 480–481. Ver- mont contends that its law (1) is necessary to protect medical privacy, including physician confidentiality, avoidance of harassment, and the integrity of the doctor-patient relationship, and (2) is integral to the achievement of the policy objectives of improving public health and reducing healthcare costs. Pp. 15–17. (b) Assuming that physicians have an interest in keeping their prescription decisions confidential, §4631(d) is not drawn to serve that interest. Pharmacies may share prescriber-identifying informa- tion with anyone for any reason except for marketing. Vermont might have addressed physician confidentiality through “a more co- herent policy,” Greater New Orleans Broadcasting, supra, at 195, such as allowing the information’s sale or disclosure in only a few narrow and well-justified circumstances. But it did not.

n tossing out their claims in Pliva Inc. vs. Mensing, Thomas put the blame on "the special, and different, regulation of generic drugs."

They are supposed to be copy-cat versions of the original, he said, so the makers cannot be sued for failing to give patients new and different warnings as they develop.

But the dissenters, led by Justice Sonia Sotomayor, said the generic drug maker should have alerted the FDA to the danger and then updated its warning label. "This outcome makes little sense," she wrote. Justices Ruth Bader Ginsburg, Stephen G. Breyer and Elena Kagan agreed.

A consumer rights lawyer said the ruling stripped many Americans of an important legal right. "Three out of four patients just lost the right to sue" if they use a generic drug and suffer complications for which they were not warned, said Louis Bograd, counsel for the Center for Constitutional Litigation. These patients "appear to be left without any legal remedy."

The Sixth Amendment’s Confrontation Clause gives the accused “[i]n all criminal prosecutions, . . . the right . . . to be confronted with the witnesses against him.” In Crawford v. Washington, 541 U. S. 36, 59, this Court held that the Clause permits admission of “[t]estimonial statements of witnesses absent from trial . . . only where the decla- rant is unavailable, and only where the defendant has had a prior opportunity to cross-examine.” Later, in Melendez-Diaz v. Massachu- setts, 557 U. S. ___, the Court declined to create a “forensic evidence” exception to Crawford, holding that a forensic laboratory report, cre- ated specifically to serve as evidence in a criminal proceeding, ranked as “testimonial” for Confrontation Clause purposes. Absent stipula- tion, the Court ruled, the prosecution may not introduce such a re- port without offering a live witness competent to testify to the truth of the report’s statements. 557 U. S., at ___.

The House meets at 10 a.m. for speeches and at noon to continue work on H.R. 1246 [sic: 1249], the America Invents Act.

Members on Thursday debated one of 15 amendments to the bill, which would substantially reform U.S. patent law. The remaining 14 are expected to be debated and voted on today.

Democrats on Wednesday said they worry that the bill would not ensure that patent fees collected by the U.S. Patent and Trademark Office stay in that office to help pay for more patent examiners. One amendment up today would eliminate language in the bill allowing the USPTO to set fees.

Others seek to eliminate or delay the move to a "first-inventor-to-file" patent system. Members on Wednesday night debated the constitutionality of such a system.

**Note Dave Boundy's comment at IPWatchdog:

Compare Rogers’ language today to the language of current statute — all but identical. The bill has no more protection against fee diversion (in the sense of fees not available to the PTO) than current statute.

No, Gene, the bill isn’t dying because of lack of commitment, but because it’s a dumb bill, a special-interest Christmas tree, and contrary to the interests of the public good.

And House Democrats are leading the charge on exposing this trickery. Of course, remember the famous Lofgren-Kappos exchange.

Wednesday, June 22, 2011

Of MySpace: MySpace held the top spot among social networks based on visitors from mid-2006 until mid-2008, (...) Why did MySpace fall so far behind Facebook? No one knows for certain. It may be that Facebook had more attractive features for people who wanted to share their identities online. It may have been that it appealed to a younger audience which tends to spend more time online.

Key House Democrats late Wednesday night [June 22] said they have serious reservations about a patent reform bill, adding to questions over whether it can pass over these objections and objections several Republicans have about the constitutionality of the bill.

Speaking on the House floor, Rep. Zoe Lofgren (D-Calif.) said her major objection with the bill is that it does not guarantee that patent fees collected by the U.S. Patent and Trademark Office are not diverted to other agencies. This is a critical issue, as many members see these fees as a way to expand USPTO's ability to examine patents more quickly and reduce approval times.

Tyco, represented by Henry Renk of Fitzpatrick, lost its appeal at the CAFC.

Judge Bryson began the opinion:

Tyco Healthcare Group LP and Mallinckrodt, Inc. (col- lectively, “Tyco”) appeal from a summary judgment in- validating the two claims of U.S. Patent No. 5,211,954 (“the ’954 patent”) for obviousness. We affirm.

Of ranges, the CAFC noted

Ordinarily, “where there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004); accord Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359, 1380-81 (Fed. Cir. 2010). That presumption is rebuttable either by a showing that the prior art taught away from the invention or by a showing of new and unexpected results relative to the prior art. Iron Grip Barbell, 392 F.3d at 1322.

Of ineffective testimony:

Those statements by Dr. Orr correctly describe the contents of the BNF reference, but they do not undermine the district court’s conclusions as to obviousness. The ’954 claims do not discuss the intended use of the capsules in a particular treatment regimen. The manufacture of a 7.5 mg temazepam capsule with the disclosed claim limitations would infringe both claims of the ’954 patent, irrespective of the efficacy of the product.

and within footnote 3:

That argument is silly. Not only is it contrary to the ordinary understanding that a dash joining two numbers signifies the end points of an inclusive range, but it also is at odds with Dr. Orr’s own reference to “5-15 mg” as constituting a “range.”

Separately,

That argument is unavailing. “The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from the prior art, can not impart patentability to the known composition.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (noting that “a new use of a known composition . . . may be patentable as a process”).

Also,

There are two problems with Tyco’s argument. First, the Matejcek study did not identify whether hard or soft capsules were used in its experiment. The prosecuting attorney for the ’954 patent represented to the PTO that Matejcek “clearly state[s]” that the capsules used were soft capsules, but there is no support for that statement in the record. After Mutual pointed out the lack of evidence on that point in its brief, Tyco refrained from characteriz- ing the Matejcek capsule as a soft capsule in its reply brief.

Merely using the word "unexpected" in the specificationis not enough:

Tyco argues that secondary considerations support a finding of non-obviousness of the ’954 claims. It contends that the experimental results described in the ’954 patent were unexpected. In support, Tyco cites the patent speci- fication’s description of the inventor’s experimental re- sults as “unexpected.” ’954 patent, col.2, ll.34-36. Unsupported statements in the specification, however, cannot support a finding of unexpected results. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).

In a post titled St. Jude postdoc faked images , Tia Ghose at The Scientist discusses the fraud of Philippe Bois, once a postdoctoral student in biochemistry at St. Jude Children’s Research Hospital and now an assistant professor at the Scripps Research Institute in Florida.

One theme Ghose emphasizes in the piece is that the fraudulent material was retracted relatively quickly, thereby reducing the problem of other people relying on the false information.

Janet Shipley, a sarcoma pathologist at the Institute of Cancer Research in England, cited the JCB paper in a 2006 review in the Journal of Clinical Pathology. She credits the co-authors for withdrawing the paper so quickly. “Due to the timing, I do not think that the paper had a major impact in the field.”

Still, Shipley was initially shocked by the withdrawal. But “when we subsequently did similar blots for another reason it was indeed clear how flawed the premise was,” she said.

But note:

Grosveld brought the errors to the journal’s attention, and the paper was retracted in May 2007, after being cited 7 times, according to ISI.

“It was an absolute low point in my scientific career,” Grosveld said.

While JCB was only out for five months before it was retracted, the falsifications derailed the research of another graduate student in Grosevld’s lab who was following up on Bois’s findings, Grosveld said. “My graduate student spent a whole year frustrated to the bone because he couldn’t replicate any of it.”

**In the realm of legal research, maybe it is time to stop relying on the article in the Stanford Observer which in turn relies on a non-existent 1947 article in the New York Times to belittle the understanding of the inventors of the transistor.

ImageCube LLC (“ImageCube”) appeals a decision of the United States District Court for the Northern District of Illinois granting judgment of noninfringement with respect to claims 1, 25, 32, and 34, and the claims de- pendent therefrom, of United States Reissue Patent 37,875 (“’875 patent”) as to defendant The Boeing Com- pany (“Boeing”). ImageCube LLC v. Boeing Co., No. 04- CV-7587, 2009 WL 2178831 (N.D. Ill. July 22, 2009) [hereinafter Summary Judgment Decision]. We affirm.

Of a 56(f) motion at district court:

the court characterized the question of whether a single powdered alloy falls within the scope of the patent as a question of claim construction, the resolution of which would not be helped by discovery.

Of claim construction:

ImageCube primarily objects to the district court’s construction of the term “components,” which the court construed to exclude metallurgical phases of a single alloy.3 We review the district court’s claim construction without deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1451 (Fed. Cir. 1998) (en banc).

The CAFC noted:

ImageCube argues that the ’875 patent specifically recognizes that metallurgical phases of the same alloy can be components. We disagree. The claims require “homogenizing . . . to form an alloy of components A and B,” see e.g., ’875 Pat- ent, col.16 ll.65–67, and the specification discusses “alloy formation upon . . . exposure to radiation,” id. col.5 ll.8–9; see also id. col.3 ll.19–21. The components must be se- lected “so as to be capable of alloying under the exposure of imagewise radiation,” thus suggesting that they must alloy during the process.

The last paragraph of the decision:

To the extent ImageCube attempts to raise issues other than claim construction, we find that these issues have been waived. Following summary judgment, Im- ageCube filed a motion for entry of judgment under Rule 54(b), stipulating that, “given the present claim construc- tion, [ImageCube cannot] prove infringement by Boeing;” thus, “[t]his case is final with respect to Boeing.” J.A. 3298. In so stipulating, ImageCube waived issues other than claim construction with respect to Boeing. In any event, we find ImageCube’s arguments relating to these issues to be without merit.

Because Smith and Nephew, Inc. (S&N) presented insufficient evidence at trial to support a finding that the RetroBut- ton® device infringed Claim 8 of U.S. Patent No. 5,645,588 (’588 patent), we reverse.

That means Arthrex wins.

S&N failed to present any evidence that the Retro- Button® device contained the claimed “graft connection element comprising a sling member [a loop of material].” Additionally, S&N offered no evidence that the “graft connection element” included the equivalent of a “sling member.”

AND

We agree with Arthrex. S&N’s theory of infringement is inconsistent with the plain language of Claim 8.

BUT

Therefore, Arthrex [sic !] has failed to offer substantial evidence to support its accusation that the RetroButton® device infringes Claim 8. Because there is no evidence of record supporting the jury’s verdict that the RetroButton® infringes the ’588 patent, JMOL is appropriate, and we must reverse.

"Restore winning ways" #1. Rutgers has always been an average to below average program. #2. Coach Schiano is a joke. $2.1 million per year (not to mention the free helicopter rides, the house on the golf course, etc..). He has been here 10+ years with no REAL bowl. Highest paid state employee and he can't produce a team that can fill a 45,000 seat stadium.

AND

Schiano is right, you are what your record says you are. And this program under the helm of this coach heading into his 11th season has an overall record 5 games under .500 and a conference record of 24-45 over that same stretch. Restore the program to its winning ways? What winning ways? What does that record say you are?

In its latest petition to the Supreme Court, Mayo asked the justices to answer whether a system is patentable if it covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve "transformations" of body chemistry.

Monday, June 20, 2011

The House moved Monday [June 20] toward a vote on the most significant overhaul of the patent system in six decades after Republicans agreed on how to fund the U.S. Patent Office so it can cope with patent applications that can now take at least three years to process.

In a comment to a post by Quinn on "first to file," Bruce Burdick wrote:

The Act of 1790 was a registration system with only a CONDITIONAL first to file award of patent. The patent registered could be invalidated under Section 5 of that act by showing that the patentee was not the true inventor. Then, the true inventor could file and obtain the patent under Section 1 of the Act. In other words, it actually was a first-to-invent system.

It is incredibly disingenuous to use that [sic] to argue for an UNCONDITIONAL first-to-file system such as in S23 or HR1249 where the patent can never be invalidated if the first to file is shown not to be the first in fact.

There is a link mentioned:

http://www.burdlaw.com/blog/?p=212

Quinn in turn responded:

Bruce-

Please provide a citation for assertion that Thomas Jefferson would have allowed a district court judge to invalidate a patent and then subsequently award the patent to another.

Why are you are grasping at straws rather than admitting you are incorrect?

-Gene

Of the change in US patent system around 1836, recall text from a previous IPBiz post:

Senator Ruggles, who received what would be the first NUMBERED patent:

That's because the government issued 9,957 patents before starting a numbering system July 13, 1836. On that occasion, U.S. Patent No. 1 went to John Ruggles of Maine for a traction wheel for steam locomotives. Ruggles happened to be chairman of the Senate Committee on Patents. Two years later, the Senate investigated him for alleged corruption regarding a different patent case. He was exonerated.

The 1793 Act’s removal of the examination proceeding made it easier to obtain patents. The 1793 Act shifted patent protection analyses from an ex ante gatekeeper role performed by the examination to an ex post proceeding in the courts. This institutional change did not abandon the screening of enforceable patents, but merely shifted an important part of the determination of what was an enforceable patent from the point of issuance to a judicial enforcement proceeding. Doing so made patents easier to obtain, but paradoxically made the enforcement of patent rights less certain, as a registration system provided little confidence in the patent’s validity.

AND

The 1793 Act75 remained intact for forty-three years, but during that time it came to be widely recognized that its provisions led to “unrestrained and promiscuous grants of patent privileges;”76 or, more generously, patents were issued that “would not be capable of sustaining a just claim for the exclusive privileges acquired.”77

Paige Wiser, who had been at the Chicago Sun-Times for 17 years, was fired after writing a “Glee Live!” concert review which was padded with a discussion of a song that was not actually performed and of a song that Wiser did not actually hear. Although there is agreement among commenters that Wiser's actions were wrong, there is a mixture of opinion about the penalty.

The Sheboygan Press noted of an op-ed by Congressmen Jim Sensenbrenner and Tammy Baldwin:

But last week, Sensenbrenner and Baldwin co-wrote an op-ed on a bill to reform procedures in the U.S. Patent Office, specifically objecting to expansion of "prior user rights," which the two lawmakers contend will suffocate small business innovation and investments.

"Expansion of prior-user rights would give new rights to those who have previously developed and used the same process or product, even if they never publicly divulged their innovation and never applied for a patent," the lawmakers said. "It would transform our patent system from one that values transparency to one that rewards secrecy."

This, they said would have a disastrous effect on research at universities, including UW-Madison, which has benefited from protection of intellectual property rights through patents.

IPBiz notes that the Constitution empowers Congress in the following way:

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

Congress has the power to grant "the exclusive Right," not less than an exclusive Right.

Sunday, June 19, 2011

“It’s very scary if people are going more towards that, to have audiences tell you how to make a show,” said Ms. Taymor, a Tony Award-winning director of “The Lion King” and other stage works and films. “Shakespeare would have been appalled. Forget about it. It would be impossible to have these works come out because there’s always something that people don’t like.”

Ms. Taymor bemoaned, too, the instant reviews that audience members posted on Twitter and blogs of the early preview performances of “Spider-Man.” The musical began running in late November even though work was still underway; the producers said the show had to start earning money given the expenses involved.

“Twitter and Facebook and blogging just trump you,” she said during a moderated discussion before an audience of 1,000 people at the annual conference of the Theater Communications Group, an umbrella organization of regional and nonprofit theaters. “It’s very hard to create, it’s incredibly difficult to be under a shot glass and a microscope like that.”

CBS Sunday Morning on June 19, 2011

Charles Osgood introduced the stories for CBS Sunday Morning on Fathers Day, June 19, 2011. Fathers Day is a day when dads are supposed to take it easy. The cover story by Barry Peterson was on "men in the middle," middle-aged men. Second preview was on Tom Hanks, done by Tracy Smith. A candid convesation with Tom Hanks. Third, was Rita Braver on Dick van Dyke, a recycled story. Fourth, hair today gone tomorrow on coloring hair. Mo Rocca noted, once upon a time, white hair was a sign of wisdom. Away with the gray. Anthony Mason on guitars.

Headlines: White House will not confirm or deny peace talks with the Taliban. Syrian guv launches crackdown along Turkish border. Five hour computer outage at United Airlines. Gifferts in Tucson. Bill Plante talks about Obama golf game of June 18. Taft in 1909 was a golfer. Mention of US Open. Stanley Cup in Boston. Clarence Clemons died in Florida.

Weather in east, 70s. Rain in a lot of places.

Men in the middle are men in a rut. The story begins with a Corvette. Buyers are gettig a fantasy. Elliott Jacques coined the term mid life crisis. Mention of MIDUS. Anthony Weiner mentioned. 7 year itch to Moonstruck. Only 10-12% of men have a midlife crisis. Midlife should be associated with competence and confidence. Genegenics is mentioned. Use of testosterone. "Low T". Sales of testosterone were 1.3 billion in 2010. Dr. Thomas Perls at Boston University is negative on testosterone, and recommends working out on weights. Ray Romano is mentioned. Romano explored changing lives on television: "Men of a Certain Age." Second teenagerhood. Contentment, not crisis, is reality of life for many men. Margie Lachmann was interviewed at several points.

Almanac. Three Stooges. June 19, 1897, birthday of Moses Horowitz, aka Mo Howard, later to become Mo of the Three Stooges. Shemp took Curly's place in 1946. Mo Howard died in 1975. Sunday Morning covered a Stooges convention in 1991.

Anthony Mason did "First String" on a Long Island guitar workshop of John Monteleone. The story had a father's day theme, keying on on father Mario Monteleone, and his son, John. "Guitar Heroes" at the Metropolitan Museum of Art. Les Paul gets a mention. DeAngelico. James D'Aquisto. Paul Simon. Dire Straits. Mandola bought by Elizabeth Taylor. Guitars named for a train theme, including Blue Comet. Also, series of four: "the four Seasons."

Fast Draw. 60% of new masters degrees go to women. Mancession. 10.5% of men unemployed. More women than men in workplace. Of 10 occupations to dominate by 2018, 8 dominated by women. On average, men die five years earlier than women.

The hair dye story had music from "The Good, the bad, and the Ugly" in the background. Mo Rocca on "Hair Today..."Gray hair used to be a sign of distinction. Now, more men than ever are "hitting the bottle." Coloring is often an emotional decision. Since 1999, men coloring has doubled. Crossing the thin gray line. Stay in nice zone where you feel young and vibrant. Reassuring jittery men. Bill Clinton's hair looks fantastic. Gray blending hair color. Would he live to dye another day.

Anthony Weiner story mentioned as example of tabloid headlines in New York City newspapers. Daily News and Post covering Weiner. Weiner's rise and fall. Fall on your sword, weiner. In the past: Ford to City: Drop Dead. Headless Body in Topless Bar.

Story on Tom Hanks begins with allusion to Forrest Gump. Then reference to new movie: Larry Crowne. You want to make it so everybody is loose enough to follow their instincts. Julia Roberts on authoritarian directors: I've been on those sets and it sucks. Hanks is a middle aged veteran, gets fired from his job and becomes a scooter-riding community college student. Hanks was born in 1956. His first film role: He knows you're alone. Then Bosoms Buddies. Hanks was in Happy Days. Big start: Splash. There's a humaness to Tom. Julia Roberts: I would hate to go grocery shopping with Tom; you'd never get out.Hanks: 80% of the population are good caring people. 20% are crooks and liars. Mention of Rita Wilson. Hanks: I want my kids to laugh every day. Hanks: I don't want to dread going to work.

Pulse said 73% of respondents said it is harder to be a father now.

Opinion piece. Fathers Day times Two. Blowing kisses can help to get strangers on your side. Entropy rules: it's a fact of life that things fall.

Bill Geist on typos, a recycled story. Jeff Deck and Benjamin Herson go around correcting typos. Just ordinary guys correcting typos. The Watch Tower at the Grand Canyon. Summons to federal court. Banned from all national parks for a year. Book: The great typo hunt. Fishers of men. Lipstick Gentlemens Club.

Next week: Money matters.

Moment of nature: Pradaxa. In a Florida swamp, with male alligators bellowing.

Peter D. Karol, once general counsel of Joule Unlimited, has joined LumenPulse as executive vice president and general counsel. Mr. Karol holds a BS in Economics from the Wharton School at the University of Pennsylvania and a JD from Columbia Law School.

On June 18, 2011, the Chicago Tribune noted: An off-duty Chicago police officer dressed up as a clown for a South Side fundraiser shot and killed a teen who held him at gunpoint tonight after the event, authorities said.

Last week, CBS had re-broadcast the 7 Jan 2011 episode of CSI: NY, titled To What End, which involved a clown shooter. See IPBiz post Clowns don't copy, but CBS does

Dr. Phillip Baker resigned as Dean at the University of Alberta over his plagiarism of a speech given by Dr. Atul Gawande at Stanford University.

The Montreal Gazette noted: [University of Alberta President] Samarasekera said the university will continue its investigation of the plagiarism allegations. She would not comment on the independent investigation of Baker's management practices launched earlier this year by the Canadian Association of University Teachers, calling it a separate matter.

Jonathan Bailey, owner of a New Orleans consulting company that deals with issues of plagiarism, said having this kind of thing occur in a graduation speech is more common than one might think.

Bailey is quoted: "Sometimes — especially with these academics — you're asking people who aren't natural speech givers to give talks. So they're not very comfortable with this idea of writing a speech and they see beautiful words written by someone else, and the talk went over extremely well. Maybe they think it's a good idea to copy from that."

One can only wonder about Joe Biden's adoption of the facts of Neil Kinnock's life in Biden's speeches.

Friday, June 17, 2011

The comment could be about patent reform 2011, but in fact it related to the AARP disclosure to the Wall Street Journal on June 17, 2011 about being open to cuts in social security. The story led off evening news broadcasts on CBS and NBC.

But what really has me ambivalent is that so many of the lawyers at top IP firms are highly educated technologists. That's good in a way, since that means they are very likely to understand what their clients are talking about.

But it is also bad since we—our society—have invested a lot of money and opportunity cost in getting these folks to their Ph.D.s—and for what? Is this the best use of such an expensive, highly trained, and presumably skilled human resource? Do we instead need more genuine innovation and innovators, and less lawyering? Or does such knowledgeable legal assistance actually promote appropriate ownership of IP, and the associated long-term benefits?

As to investing money and opportunity cost, Bill (and a few others) seem to have forgotten the words of Alan Hale (of Hale-Bopp) from the year 1997:

I am Alan Hale, the co-discoverer of Comet Hale-Bopp which, as I'm sure you're aware, is getting a tremendous amount of media attention at this time. Like I'm sure is true for many of you, I was inspired by the scientific discoveries and events taking place during my childhood to pursue a career in science only to find, after completing the rigors of undergraduate and graduate school, that the opportunities for us to have a career in science are limited at best and are which I usually describe as "abysmal." Based upon my own experiences, and those of you with whom I have discussed this issue, my personal feeling is that, unless there are some pretty drastic changes in the way that our society approaches science and treats those of us who have devoted our lives to making some of our own contributions, there is no way that I can, with a clear conscience, encourage present-day students to pursue a career in science. It really pains me a great deal to say something like that, but I feel so strongly about this that I have publicly made this statement at almost every opportunity I have been given.

I am trying to use the media attention that is currently being focused upon me to raise awareness of this state of affairs, and perhaps start to effect those changes that will allow me to convey a more positive message to the next generation. So far, I'm sensing a certain reluctance among the media to discuss this issue, as they seem far more interested in items which I consider to be irrelevant and unimportant. But I intend to keep hammering away at this, and I'd like to believe that eventually some are going to sit up and take notice. I am also attempting to schedule meetings with some of our government leaders, to see if I can at least get some acknowledgement from Washington that this is a problem that needs to be dealt with.

A NBC Nightly News story on 3 April 09 discussed how an IBM Fishkill employee [Frederic (Rick) Clark] was offered the opportunity to keep his job, in India at the prevailing salary in India [20 to 25% of US].

A computer-implemented method, comprising: receiving from a first mobile device a first request to participate in social networking; within a time window of receiving the first request, receiving from a second mobile device a second request to participate in the social networking; determining that the second mobile device is located within a social networking distance of the first mobile device; determining a match score between the first mobile device and the second mobile device based on automatically created usage data of the first mobile device and the second mobile device; and sending a notification to at least one of the first mobile device and the second mobile device, the notification indicating that a social networking opportunity exists within the social networking distance.

There is a related PCT: PCT/US10/58944 filed on 12-03-2010 which is Published claims the benefit of 12/638,908.

From technolog:

So exactly how would Apple's matchmaking app work? Based on what we're able to gather from the patent application, it would use your current location as well as your public data — which could include downloaded songs, shared photos, places traveled, or more — to pair you up with seemingly compatible nearby individuals. The process sounds like it would be opt-in — meaning that you would specifically allow the app to share and seek out information — and strictly policed by Apple.

Now of course this is all speculation and it may be a long time before we ever discover if we're hitting the nail on the head — if we ever discover it. After all, Apple is prone to filing a lot of patent applications to simply protect ideas — many of which never turn into actual products.

The nonprecedential case of Stamps v. Endicia covers a lot of ground,but its treatment of a webpage as prior art (with a dissent by Bryson)is informative. The issue of webpages as prior art is likely to bere-visited.

The CAFC noted:

A prior art reference cannot constitute a “printed publication” under §102(b) if it has not been made “publicly accessible.” In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004). That inquiry fo- cuses on the reference’s accessibility to the “public inter- ested in the art.” Id. Stamps.com contends that the Tygar-Yee article should not have been treated as § 102(b) prior art because it was not publicly accessible.

We hold that the Tygar-Yee article was publicly ac- cessible. The Tygar-Yee article, dated March 1, 1993, was written by Tygar and Yee and is entitled “Cryptography: It’s Not Just for Electronic Mail Anymore.” J.A. 6416–39 (emphasis in original). This article was sponsored by the United States Air Force, a Presidential Young Investiga- tor Award, and Motorola, Inc. In an expert declaration submitted by Tygar in this case, he listed the Tygar-Yee article as prior art, J.A. 7951, and stated that he under- stood that “prior art consist[s] of publications . . . dated before the invention or more than one year before the filing of the patent application,” J.A. 7961. Other evi- dence confirmed the public availability of the article. For example, the article was catalogued by Carnegie Mellon University and listed as available on its indexed website in 1993 as “CMU-CS-93-107.ps.Z.” This document was listed as “last modified” on May 8, 1993. J.A. 10964.Significantly, that date is several weeks after the date appearing in the article itself, suggesting that the website was not simply parroting the date appearing in the arti- cle. Moreover, Carnegie Mellon's website is a public forum where leaders in the field of computer science and other related fields certainly would have had access to the Tygar-Yee article. The paper was additionally cited in a second paper presented by Tygar and Yee in 1994, and Stamps.com itself identified the Tygar-Yee article as bearing a 1993 date in an information disclosure state- ment filed in connection with another patent that is currently not in suit.

Stamps.com did not submit any evidence to rebut the evidence that this paper was published in 1993. Thus, no genuine issues of material fact remain as to whether the article was publicly available more than one year prior to the filing dates of the ’991 patent (October 2, 1996) and the ’777 patent (July 15, 1998). The district court did not err in treating the Tygar-Yee article as § 102(b) prior art.

On secondary considerations:

However, Stamps.com did not demonstrate the requisite “nexus between the merits of the claimed invention” and the “evidence of secondary considerations.” Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir. 2008) (quoting Ruiz v. A.B. Chance Co., 234 F.3d 654, 668 (Fed. Cir. 2000)); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (holding that the patentee’s proof must show “that the sales were a direct result of the unique characteristics of the claimed invention”). Given the strong showing of obviousness, we find that the evidence of secondary considerations was inadequate to overcome the legal conclusion that the contested claims would have been obvious. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).

Priority of invention “goes to the first party to reduce an invention to practice unless the other party can show that it was the first to conceive the invention and that it exercised reasonable diligence in later reducing that invention to practice.” Mahurkar, 79 F.3d at 1577. A showing that a patent was conceived at an earlier date and reduced to practice with reasonable diligence is called an effort to swear behind an earlier patent. See, e.g., Honeywell Inc. v. Victor Co. of Japan, Ltd., 298 F.3d 1317, 1327 (Fed. Cir. 2002).

Of conception of an invention:

At issue then is the ’777 patent’s date of conception. Conception is the formation, in the mind of the inventor, of “a definite and permanent idea of the complete and operative invention . . . . The idea must be ‘so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.’” Mahur- kar, 79 F.3d at 1577 (quoting Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994)).

Clear and convincing evidence:

Accordingly, the burden of proof in interference actions is the lower preponderance of evi- dence standard, and the burden is generally assigned to the junior party (the party that entered the interference action with a later filing date). See 37 C.F.R. § 1.657. In contrast, a party asserting invalidity in a district court always bears the burden of proof by clear and convincing evidence. Innovative Scuba Concepts, Inc. v. Feder Indus., Inc., 26 F.3d 1112, 1115 (Fed. Cir. 1994).

The March Status Report makes only opaque and incomprehensible references to a “button array” and “iButton.” These references hardly show that the conception for the ’777 patent was “so clearly defined . . . that only ordinary skill would be necessary to reduce the invention to practice.” See Mahurkar, 79 F.3d at 1577. Indeed, Tygar’s expert testimony demonstrates that one of skill in the art would not have comprehended the status report: [The March Status Report] is written in a way that prevents a person of ordinary skill in the art from knowing the particular subject matter to which it relates; its cursory language renders much of [the status report] unintelligible. I could not identify any portion of [the status report] that a person of ordinary skill in the art of computer science would recognize as a clear reference to the particular invention covered in the claims of the ’777 patent, let alone a complete disclosure of that invention.

Opportunity to respond:

Because these declarations were raised for the first time in a reply brief to which Endicia did not have anopportunity to respond, we hold that the district court acted within its discretion when it did not consider these supplementary declarations. See In re Cygnus Tele- comms. Tech., LLC, Patent Litig., 536 F.3d 1343, 1351–53 (Fed. Cir. 2008) (applying regional circuit law in deciding the admissibility of evidence that was not included in motions for summary judgment); Merrick v. Paul Revere Life Ins. Co., 500 F.3d 1007, 1013 (Fed. Cir. 2007) (hold- ing that issues raised for the first time in a reply brief are generally considered waived, but making an exception where appellee was given an opportunity to respond); Zamani v. Carnes, 491 F.3d 990, 997 (9th Cir. 2007) (holding that a district court “need not consider argu- ments raised for the first time in a reply brief”).

Blackboard is cited:

In Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009), we held that, “if one employs means-plus-function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language.” (citation and quotation omitted); see 35 U.S.C. § 112, ¶ 2. “If the specification does not contain an adequate disclosure of the structure that corresponds to the claimed function, the patentee will have ‘failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112,’ which renders the claim invalid for indefi- niteness.” Blackboard, 574 F.3d at 1382 (quoting In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc)).

AND

In Aristocrat Technologies Australia Pty Ltd. v. Inter- national Game Technology, 521 F.3d 1328, 1333 (Fed. Cir. 2008), we held that a “computer-implemented means- plus-function term is limited to the corresponding struc- ture disclosed in the specification and equivalents thereof, and the corresponding structure is the algorithm.” (quot- ing Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005)). In a means-plus-function claim in which the disclosed structure is a computer, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999).

AND

We must determine whether a skilled artisan would have understood the specification to en- compass the necessary program and could have imple- mented the program—not simply whether he could have written the program. See Med. Instrumentation & Diag- nostics Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed. Cir. 2003). “It is not proper to look to the knowledge of one of skill in the art apart from and unconnected to the disclosure of the patent.” Id.

Conclusory opinions:

These conclusory opinions fail to raise a genuine issue of fact. See Innoge- netics N.V. v. Abbott Labs., 512 F.3d 1363, 1373–74 (Fed. Cir. 2008) (finding an expert report insufficient to raise a genuine issue of fact where the expert “merely lists a number of prior art references and then concludes with the stock phrase ‘to one skilled in the art it would have been obvious to perform [the claimed methods]’”).

Because this argument was not properly raised below, it is not properly before us on appeal. See, e.g., Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997).

***Judge Bryson DISSENTED as to the Tygar-Yee article:

The Tygar-Yee article is dated March 1, 1993, but there is no evidence as to the date of its publication. The majority notes that the article was cited in a subsequent article by Tygar and Yee published in 1994. That citation, however, does not constitute evidence that the 1993 Tygar-Yee article was ever publicly accessible, particu- larly in light of the fact that the later article was written by the same authors. The majority also relies on a decla- ration by Dr. Tygar, the co-author of the Tygar-Yee arti- cle, stating that the article is prior art. Dr. Tygar’s declaration, however, consists of a conclusory legal asser- tion and provides nothing by way of evidence in support of that assertion. In the summary judgment proceedings, Endicia of- fered as an exhibit a printout of a webpage that an Endi- cia attorney identified as “a printout of Carnegie Mellon University’s School of Computer Science archive report for the year 1993.”

The exhibit is entitled “Index of/anon/1993” and consists of a list of file names, file sizes, and the dates on which the files were last modified. Endicia claims that one of the files, “CMU-CS-93- 107.ps.Z,” represents the Tygar-Yee article. That file name lists a modification date of May 8, 1993. The major- ity characterizes the website as a “public forum,” but the record contains no evidence that the webpage in the exhibit was accessible to the public or widely dissemi- nated in 1993. See In re Lister, 583 F.3d 1307, 1211 (Fed. Cir. 2009) (“A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art[,] exercising reasonable dili- gence, can locate it.”); Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1332-35 (Fed. Cir. 2009) (holding that an academic paper distributed among a limited set of professional colleagues is not a prior art publication). The majority highlights the fact that Stamps.com identified the Tygar-Yee article as bearing a 1993 date in several information disclosure statements that it filed in 2000 in connection with other patents. It is well settled, however, that a patentee’s inclusion of a reference in an information disclosure statement does not constitute an admission that the reference is prior art. 37 C.F.R. § 19.7(h); ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 866 (Fed. Cir. 2010); Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1279 (Fed. Cir. 2003). Finally, the majority states that Stamps.com submit- ted no evidence that the Tygar-Yee article was not pub- lished in 1993. Apart from the ordinary difficulty of proving a negative, it is well settled that, at the summary judgment stage, “the moving party must make a prima facie showing that it is entitled to summary judgment.” Celotex Corp. v. Catrett, 477 U.S. 317, 331 (1986). When the movant has the ultimate burden of proof on an issue, it must show that it is entitled to judgment, and if it does not do so, the non-moving party need not come forward with opposing evidence. Saab Cars USA, Inc. v. United States, 434 F.3d 1359, 1368 (Fed. Cir. 2006); 11 James Wm. Moore, Moore’s Federal Practice ¶ 56.40[1][c] (2011 ed.) (“[T]he movant [with the burden of proof on the merits] must produce evidence that would conclusively support its right to a judgment after trial should the nonmovant fail to rebut the evidence. . . . [T]he evidence in the movant’s favor must be so powerful that no reason- able jury would be free to disbelieve it.”) In the context of a motion for summary judgment of invalidity, the burden is not on the patentee to present evidence that a reference is not prior art; instead, the party challenging the patent has the burden to make a prima facie showing that the reference was publicly accessible. Because Endicia failed to show that the Tygar-Yee article is prior art, I would hold that the district court erred in invalidating the six asserted claims of the ’777 and ’991 patents as obvious.

Thursday, June 16, 2011

The San Francisco Chronicle story begins: Oracle Corp. is seeking billions of dollars in damages in a patent- and copyright-infringement suit against Google Inc., claiming the search-engine company's Android software uses technology related to the Java programming language

Hal Milton teaches a course in patent application preparation at Wayne State University Law School. Hal currently manages the Dickinson Wright Intellectual Property Academy, training the art of patent application preparation (hmilton@dickinsonwright.com). He is the inventor of patentarchitect.com, a word processing program dedicated to preparing a patent application. U.S. Patent No. 7,890,851 (filed Mar. 19, 1999). He is in the final editing process of a book that is an extension of this article entitled Preparing a Patent Application in Accordance with Appellate Opinions. The opinions in this paper are solely of theopinions of Dickinson Wright PLLC, its staff, or its clients.

Central to this appeal is whether the terms “modern- izing device” and “computing unit” are means-plus- function limitations that fall within the ambit of § 112, ¶ 6. Because we conclude that the claimed “mod- ernizing device” and “computing unit” are not means-plus- function limitations, we do not address whether the written descriptions disclose corresponding structure.

Of the law:

Section 112, ¶ 6 allows a patentee to express a claim limitation as “a means or step for performing a specified function without the recital of structure, material, or acts in support thereof,” and the section provides that claim limitations expressed in this manner “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” That provision applies “only to purely functional limita- tions that do not provide the structure that performs the recited function.” Phillips v. AWH Corp., 415 F.3d 1303, 1311 (Fed. Cir. 2005) (en banc). Whether certain claim language invokes § 112, ¶ 6 is an exercise in claim con- struction and is therefore a question of law, subject to de novo review. Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696, 702 (Fed. Cir. 1998).

The framework under which we determine if a claim limitation invokes § 112, ¶ 6 is straightforward. The use of the term “means” triggers a rebuttable presumption that § 112, ¶ 6 governs the construction of the claim term. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). Conversely, where, as here, the claim lan- guage does not recite the term “means,” we presume that the limitation does not invoke § 112, ¶ 6. Personalized Media, 161 F.3d at 703–04. When a claim term lacks the word “means,” the presumption can be overcome if the challenger demonstrates that “the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘func- tion without reciting sufficient structure for performing that function.’” CCS Fitness v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).

Of the analysis:

Relying primarily on Personalized Media, Inventio argues that, to determine if a claim term that lacks the word “means” is subject to § 112, ¶ 6, the court should consider the intrinsic record. We agree with Inventio. Claims are interpreted in light of the written description supporting them, and that is true whether or not the claim construction involves interpreting a “means” clause. The presumption that a claim lacking the term “means” recites sufficiently defi- nite structure can be rebutted “if the evidence intrinsic to the patent and any relevant extrinsic evidence so war- rant[s].” Personalized Media, 161 F.3d at 704. In decid- ing whether a challenger has rebutted the presumption, “the focus remains on whether the claim as properly construed recites sufficiently definite structure to avoid the ambit of § 112, ¶ 6.” Id. To determine the proper construction of a claim term, we look to the words of the claims themselves, the written description, the prosecu- tion history, and any relevant extrinsic evidence. Phil- lips, 415 F.3d at 1315–17. In addition, we allow an inventor to provide, in the written description, express definitions for terms that appear in the claims, and those definitions govern the construction of the claims. Id. at 1316.

Toward the beginning of the opinion about ThyssenKrupp’s motion to strike:

ThyssenKrupp’s motion lacks merit. It reargues the merits of the case. ThyssenKrupp simply disagrees with Inventio’s legal arguments, and its motion seems to us to be an improper attempt to obtain the final word in the appeal, a practice that we strongly discourage. See Aventis Pharma S.A. v. Hospira, Inc., 637 F.3d 1341, 1343–44 (Fed. Cir. 2011). Its nasty tone is exemplified by use of the word “blatantly” or “blatant” at least four times. Thus, ThyssenKrupp’s filing of this motion borders on the type of frivolous and wasteful litigation tactics that we have previously frowned upon. See Otocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 943–44 (Fed. Cir. 1990). We accordingly deny ThyssenKrupp’s motion and turn to the merits of Inventio’s appeal.

Wednesday, June 15, 2011

The provision returns us, in some respect, to a system that our founders created and used: first inventor to register. Former Attorney General Michael Mukasey recently described the proposal as "constitutional and wise."

Separately, a comment to Politico:

Of

Furthermore, unlike their counterparts elsewhere, U.S.inventors can’t ask for “supplemental” reviews that let them raise questions about their own projects and get formal opinions from the Patent and Trademark Office.

U.S. patentees, as well as third parties, can, under CURRENT patent law, seek review of an issued patent via re-examination, whether ex parte or inter partes. Separately, under rule 99, third parties can submit prior art to the US Patent Office.

Of

when—if ever—they’ll have exclusive rights to their inventions that patents are supposed to provide. While uncertainty isn’t always a major obstacle for big business, it can wreak havoc on small enterprises, which lack the resources for protracted court battles over who invented something.

the proposed HR 1249 has a section on prior user rights which allows a person who operated secretly outside the patent system to be immunized from an infringement suit brought by a person who operated within the patent system and disclosed publicly the patentee's invention for all to see. This aspect of HR 1249 is a return to secret guild practices, which were rejected in the patent statute in Venice more than 500 years ago. Under HR 1249 a patentee could never be sure he could enforce his patent, a clear de-incentive to public disclosure and to the whole purpose of the patent system, which allows technology progress by allowing all to see the work of the inventor.

link: http://www.politico.com/news/stories/0611/57094.html

**UPDATE. Of the comment below, a comment within Quinn's post criticized Quinn's analysis of the initial patent act (1790).Separately, a letter circulated by Dale Carlson on 17 June 2011 includes the following:

Thus the Patent Act of 1790 authorized the grant of a patent only to a person who has “invented or discovered any useful art . . . not before known or used.” See Patent Act of 1790, § 1, 1 Stat. at 109-110. The Patent Act of 1790 further provided for termination of a patent “if it shall appear that the patentee was not the first and true inventor.” See Patent Act of 1790, § 6, 1 Stat. at 111. This uniquely American first-to-invent requirement was readopted in all patent statutes enacted by successive Congresses in 1793, 1836, 1870 and 1952.

AND

Justice Joseph Story, recognized by patent scholars today as one of the founders of American patent law, wrote that “No person is entitled to a patent under the act of congress unless he has invented some new and useful art, machine, manufacture, or composition of matter, not known or used before.” Bedford v. Hunt, 3 F. Cas. 37, 37 (C.C.D. Mass. 1817) (No. 1,217)

**Between 1793 and 1836, there were no patent "examiners" and the job of examinationwas done by the courts. That the analysis of patentability was done later in time does notmean the US was a "first to file" jurisdiction in that time period.

On June 14, 2011, Scott Pelley started the CBS Evening News with a piece on the bad state of the US economy, initially noting a decline of retail sales, with no fewer than four correspondents hammering the bad news. Dean Reynolds spoke of $30K for a new car. Dealers are offering fewer incentives than in the last nine years. The earthquake in Japan created an inventory shortage: "you cannot sell what you do not have." The second report originated in Paramus, NJ and discussed the bad shape of an appliance store. Third story was on "weak pay checks meeting higher prices." The fourth story was on unemployment done by correspondent Anthony Mason. Dow Chemical CEO Andrew Liveris complained that there were not enough skilled US workers to fill available jobs. He noted there were 1 million jobs available and only 200,000 grads to fill it. Dow employs about 24,000 workers, with a chem engineer starting at about $85,000. The story compared the situation to Infosys in India. Dow is opening R&D labs in China and Brazil. The story noted Innovation creates jobs. America's high schools are obsolete. There is a need to make science careers glamorous. IPBiz asks: where is Alan Hale when we need him?Hale wrote: I know that I'm not alone in being frustrated about the current prospects for pursuing any kind of decent career within science, and I'm quite sure that many of you have "horror stories" about your searches for decent employment that are quite similar to my own. See IPBiz post A "Sputnik moment", again and again?

One notes Liveris has a book out: "Make it in America: The Case for Re-Inventing The Economy." MLive reported: According to Dow's 2011 proxy statement, after salary, bonuses, stock awards and other compensation, Liveris earned $21,337,757. That total is up more than $3 million from his earnings of $18,279,792 in 2009.

HuffPo noted:

Pelley ended the week just as Katie Couric, and Bob Schieffer before her, ended nearly every week of their tenures: in third place. The "CBS Evening News" averaged 5.7 million viewers. That's almost the exact average that Couric drew during her final month behind the anchor desk, and just below the numbers that Harry Smith drew during the interim period between her departure and Pelley's arrival.

***Update.

One commenter wrote in:

Engineers are saying those over 50 are getting dumped, not really a shortage but a low salary shortage

Pelley depicted a shortage of outcoming graduates, but didn't really address whether there are in fact workers available.

So Pelley took "the same old, same old" approach rather than digging into off-shoring.

Note to Pelley: check out NBC from two years ago-->

A NBC Nightly News story on 3 April 09 discussed how an IBM Fishkill employee [Frederic (Rick) Clark] was offered the opportunity to keep his job, in India at the prevailing salary in India [20 to 25% of US].

Last week, NBC's "Nightly News" spent a total of 8 minutes, 54 seconds on the Weiner story, according to the Pew Research Center Project for Excellence in Journalism. ABC devoted 8:16 to Weiner, while CBS spent 2:33 on the story, Pew researchers found.

The issue isn't the sexting; it's the Weiner lied about it. Watergate re-visited, but Pelley is missing in action.

AP also noted:

From the on-set recreation of a map that used to hang behind Walter Cronkite to resurrection of theme music that played when Dan Rather was anchor, Pelley's first broadcasts have sent welcoming messages to old-time news traditionalists.

Basically, Pelley and CBS are trying to build better vacuum tubes in the age of the transistor.

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.